Sunday, 2 November 2014

T 1488/10 Blown away by the drawings

In this appeal after a refusal in examination, the issue was
raised under which conditions information can be derived from a schematic drawing.
The board concludes that in view of the text the ratio of two lengths L1 and L2 seems essential and
may assumed to be represented well in the figure. However, this does not hold for other
measures. In this case, the prior art drawing was not seen as novelty destroying.
The application was nevertheless refused under inventive step primarily since
the main problem was not solved over the entire extent of the claimed
subject-matter.Summary of Facts and SubmissionsI. The appeal concerns the decision of the examining division
refusing the European patent application No. 03 731 470 for lack of novelty in
relation to the main and first auxiliary request then on file (Articles 52(1)
and 54 EPC). The second auxiliary request then on file was "not further
considered" (Article 114(2) and Rule 116(1) EPC).II. Reference is made to the following documents: […]D3: EP 1 050 347 A,III. At the oral proceedings before the board the appellant
requested that the decision under appeal be set aside and that a patent be
granted on the basis of the main request or on the basis of one of the first to
third auxiliary requests, all filed with letter dated 20 August 2014, or on the
basis of the fourth auxiliary request filed during the oral proceedings.The appellant further requested to remit the case to the
department of first instance for further prosecution, as the case had never
been discussed in the first instance with D1 as a starting point.The board decided not to remit the case to the department of
first instance.IV. The wording of independent claim 1 according to the main
request and the auxiliary requests is as follows (board's labelling (i), (i)',
(ii), (ii)' and (iii)):Main request:"1. An ultrasonic horn assembly (10) for transporting
ultrasonic energy to an operating location to apply the ultrasonic energy to at
least one article at theoperating location, the horn assembly comprising:a first stack component (12; 14; 16; 18) having at least one
transfer face;a second stack component (12; 14; 16; 18) having at least one
transfer face adapted to engage the transfer face of the first stack component
at an interface (26;28; 30) for transmitting ultrasonic energy from one of the first
and second stack components to the other;characterized by a connector (20; 22; 24) which connects the
first stack component to the second stack component by applying opposing
clamping forcesoriginating at locations within the first and second stack
components, which opposing clamping forces oppose each other across the
interface (26; 28; 30), and(i) |which connector is free of connection to at least one of
the first and second stack components along a segment (32) of the connector
passing through a planedefined by the interface |(ii) |wherein the segment (32) of the connection which is free
of connection constitutes between 50% and 75% of an overall length of the
connector." |First auxiliary request: […]

V. The appellant argued essentially as follows:a) Procedural matters - request for remittal of the case to the
department of first instanceInventive step had never been discussed before the examining
division with document D1 as a starting point. The case should therefore be
remitted to the department of first instance in order to safeguard the assessment
of inventive step over document D1 in two instances.b) Main request - novelty / inventive stepThe fact that the relative lengths of the slits as measured from
the Figures of document D3 corresponded to the relative lengths as described
was mere coincidence. Furthermore, the description of D3 only related to the
relative lengths of the slits and provided no indication that this was relevant
for the length of the threaded section of the stud relative to the smooth
section. Moreover, the relative lengths of the threaded and smooth sections
were different in Figures 1, 4, and 8 even though these Figures were described
to depict identical transducers (except for the fastening to the cleaning
tank). No technical teaching could thus be derived from measure­ments taken
from the Figures of D3. Feature (ii) of claim 1 had therefore not been
disclosed in D3. This feature had not been disclosed in documents D1 and D4,
either.Document D1 constituted the closest state of the art.The problem addressed by the invention was to mitigate the wear
on the transfer faces of the stack components whilst ensuring good transfer of
ultrasonic energy across the interface between the components. This was solved
by including feature (ii) which ensured that there was a substantial unconnected
length in the region of the interface and that the clamping point was moved
deeper into the components.Documents D3 and D4 related to different arrangements, for
example in D3 a bolt was needed at one end. Since neither document D3 nor
document D4 disclosed feature (ii), it would not be possible to arrive at the
present invention by combining D1 with either D3 or D4. Furthermore, as
document D1 was concerned with different problems and had different aims, there
would have been no reason to have selected the claimed construction. In
particular, the structure of the thread in document D1 was selected to avoid
fracturing the stud itself and to enhance its fatigue strength. The
considerations in designing the thread were therefore necessarily different
from those of the invention. Furthermore, in document D1 it was taught that the
threaded portion had "at least" a certain length (page 3, line 123 -
page 4, line 3) thus suggesting that a longer threaded portion was preferable.
This pointed away from the invention.The subject-matter of claim 1 of the main request was therefore
new and involved an inventive step.c) Auxiliary requests - novelty / inventive step […]

Reasons for the Decision1. The appeal is admissible.2. Procedural matters - request for remittal of the case to the
department of first instance2.1 The appellant argued that inventive step had never been
discussed before the examining division with document D1 as a starting point
and that the case should therefore be remitted to the department of first
instance in order to safeguard the assessment of inventive step over these
documents in two instances.2.2 According to Article 111(1) EPC 1973 a board of appeal
"may either exercise any power within the competence of the department
which was responsible for the decision appealed or remit the case to that
department for further prosecution". This article confers the
discretionary power on a board of appeal in charge of reviewing the decision of
an examining division refusing an application either to rule on the case itself
or to remit the matter for further prosecution to the examining division,
depending on the circumstances of the case (see G 10/93, paragraph 5 of the
Reasons).Furthermore, in ex parte proceedings, where the departments of
both instances must ensure that the conditions for patentability are met, the
boards of appeal are restricted neither to examination of the grounds for the
contested decision nor to the facts and evidence on which the decision is based
(see G 10/93, paragraph 3 of the Reasons).2.3 In the present case, the application was refused on the
ground of lack of novelty in view of document D3 in relation to the main and
first auxiliary requests then on file. However, during the examination
proceedings the examining division expressed its opinion that the
subject-matter of claim 1 filed with the letter dated 21 August 2007, which
essentially corresponds to claim 1 of the main request, lacked inventive step
in view of document D1 (see points 2. to 4. of the examining division's
communication dated 31 August 2007). The same objection is also mentioned in
the annex to the summons dated 16 October 2009 to attend the oral proceedings
before the examining division (see point 7. of the annex).The objection of lack of inventive step over D1 had therefore
already been raised during the examination proceedings and there is no
indication on file that the examining division had changed its opinion in this
respect. The mere fact that this objection was not included as a further ground
for refusal in the contested decision does not warrant remittal of the case to
the department of first instance, especially as the outcome of the case before
the board is - for the reasons provided in detail below - the same as that
before the department of first instance.2.4 Finally, it is also noted that the request for remittal was
made for the first time at the oral proceedings before the board, i. e. after
the appellant had made a written reply, including amended claims, to the
inventive step objection raised by the board in its communication annexed to
the summons to oral proceedings.2.5 Therefore, in the interest of efficient proceedings, also in
view of the fact that the board was already engaged in the oral proceedings
when the request for remittal was first made, and in order to avoid keeping the
public in uncertainty about the fate of the application for potentially several
more years, the board judges that the case is not to be remitted to the
department of first instance.3. Main request - novelty in view of document D33.1 In the decision under appeal the examining division held
that feature (ii) of claim 1 of the main request had been disclosed in document
D3, namely in Figure 4 and certain parts of the description.3.2 Figure 4 of document D3 illustrates the essential parts of
the ultrasonic transducers 80 of document D3, such as masses 82, 84,
piezoelectric ceramics 86, 88, stud 85, nut 87, and electrodes 81, 83. As such
it is generally considered to be a schematic drawing commonly used in patent
applications.3.3 Also shown in Figure 4 are the longitudinal length L1 of the
front mass 82 and the depth L2 of the slits 82a. In view of the fact that the
ratio of these lengths as measured from Figure 4 coincides essentially with the
ratio of these lengths as described in paragraph [0026] of the description the
examining division concluded in the contested decision that - at least in the
longitudinal direction - the relative dimensions as shown in Figure 4 could be
considered as conforming to the relative dimensions of the real device (point
3.1.3 of the Reasons of the contested decision).3.4 The length L1 of the front mass 82 as well as the depth L2
and the width t of the slits 82a play a particular role in the ultrasonic
transducers of document D3. This is reflected by the fact that the references
"L1", "L2" and "t" are shown in Figure 4. In
particular, the ratio of the lengths L1 and L2 is considered to be an important
parameter allowing - when duly chosen - the mechanical quality factor
("Qmeff") of the ultrasonic transducer to be improved (see D3,
paragraphs [0005] and [0010]). Therefore, it can be expected that these lengths
are represented in such a way in Figure 4 that the ratio of their representations
is in accordance with the ratio of the lengths mentioned in the description. As
the ratio L2/L1 is described to have a value of between 1/3 and 1/2 (D3,
paragraph [0010], claim 2), the ratio of the representations can be expected to
fall into this range as well.3.5 However, the dimensions of the other parts of the ultrasonic
transducer shown in Figure 4 have to be distinguished from L1, L2, and t. First
of all, they are not referred to by any reference signs in the Figure.
Furthermore, they are not described as having any specific significance for the
claimed invention. For example, no advantages are mentioned in the description
concerning particular choices of the dimensions of these other parts.Regarding the representation of the dimensions of these other parts
of the device, factors like the clear visibility in the Figure of these parts
may well have induced the draughtsman to represent their dimensions in a manner
that does not correspond to their actual dimensions. Therefore, in relation to
these other parts of the ultrasonic transducer, the board is of the opinion
that dimensions obtained merely by measuring the schematic drawing in Figure 4
does not form part of the disclosure of document D3 (see T 204/83, point 7 of
the Reasons).Accordingly, the relative dimensions of the length of the stud
85 and the length of the connection-free part thereof, as obtained by carrying
out measurements on Figure 4 does not constitute part of the disclosure of
document D3. Hence, feature (ii) of claim 1 of the main request has not been
disclosed in document D3.3.6 The subject-matter of claim 1 of the main request is
therefore considered to be new over document D3 (Article 52(1) EPC and Article
54(1) EPC 1973).4. Main request - inventive step4.1 Closest state of the art […]4.2 Distinguishing features […]4.2.3 The subject-matter of claim 1 of the main request differs
from the device of the closest prior art document D1 by feature (ii) specifying
that the segment of the connection which is free of connection constitutes
between 50% and 75% of an overall length of the connector.4.2.4 Objective technical problemThe appellant argued that the problem addressed by the invention
was to mitigate the wear on the transfer faces of the stack components whilst
ensuring good transfer of ultrasonic energy across the interface between the
components.From the description of the application it emerges that the
clamping point has to be moved deep into the stack components in order to
achieve a uniform distribution of clamping forces across the interface (see
page 9, lines 14-17 of the description of the application). In this way
fretting, spalling and oxidation is substantially reduced or eliminated at the
interfaces and the energy transfer at the interface is improved (see the
description, page 10, line 31 - page 11, line 7).Therefore, the problem mentioned by the appellant of mitigating
wear and ensuring good energy transfer depends on the clamping point being
moved deep into the stack component. However, by merely specifying that the
connection-free segment of the connector is between 50% and 75% of the overall
length of the connector it is not ensured that the clamping point is in fact
moved deep into the stack component. Rather, in order to achieve this the
length of the connector and the dimension of the stack component would have to
be specified as well. The problem mentioned by the appellant is therefore not
solved over the entire extent of the claimed subject-matter. Hence, the problem
has to be formulated in a less ambitious way.In document D1 there is no disclosure regarding the length of
the unthreaded portion 40 of the stud 34 in relation to the entire length of
the stud 34. The objective technical problem is therefore considered to be to
provide a concrete implementation of the connection between the stack
components.4.2.5 ObviousnessThe appellant argued that the structure of the thread of the
stud in document D1 was selected to avoid fracturing of the stud itself; the
considerations in designing the thread were therefore different from those of
the invention.According to document D1, the object of mitigating any tendency
to fracture in the stud is achieved by the stud having a smooth-surfaced
intermediate portion having a diameter not exceeding the core diameter of
either of the threaded portions of the stud (see document D1, page 1, lines
60-78). Providing a concrete implementation of the connection between the stack
components is entirely compatible with this object of document D1 and will
necessarily result in the stack components being connected by a stud having
reduced tendency to fracture.Furthermore, the appellant argued that in document D1 it was taught
that the threaded portion had "at least" a certain length thus
suggesting that a longer threaded portion was preferable, which pointed away
from the invention.Indeed, it is indicated in document D1 that the length of the
threaded portion 36 of the stud 34 was preferably at least 1.5 or 2 times the
diameter thereof when the extension member 30 is made of titanium or aluminium,
respectively (D1, page 3, lines 121-128). However, this preferable size of the
threaded portion 36 is compatible with the connection-free segment of the
connector constituting between 50% and 75% of the overall length of the
connector. A longer threaded portion merely has to be compensated by a
correspon­dingly longer unthreaded portion. Hence, the above indication in D1
is not considered to point away from the invention.Moreover, it is also indicated in document D1 that the thread of
each of the threaded bores 42, 44 is spaced from the end surface of its member
by a distance equal to not less than two turns of the thread in order to avoid
subjecting the members in the vicinity of their abutting surfaces to any
distortion-creating forces (D1, page 4, lines 39-48), thus implying that the
unthreaded portion 40 of the stud 34 has to have at least a certain length. In
the board's judgment it would therefore be obvious for the skilled person to
implement the stud 34 of document D1 in such a way that the unthreaded portion
40 of the stud 34 constitutes between 50% and 75% of the overall length of the
stud thereby arriving at the claimed subject-matter.Therefore, the subject-matter of claim 1 of the main request
does not involve an inventive step (Article 52(1) EPC and Article 56 EPC 1973).5. First auxiliary request - inventive step […]6. Second auxiliary request - inventive step […]7. Third auxiliary request - inventive step […]8. Fourth auxiliary request - inventive step […]OrderFor these reasons it is decided that:The appeal is dismissed.

This decision has European Case Law Identifier

ECLI:EP:BA:2014:T148810.20140925. The decision can be found here. The file wrapper can be found here